The Complainant is Advanceit Financial Corporation of Montreal, Quebec, Canada, represented by Kaufman Larameé LLP, Canada.
The Respondent is Jason Kummerl of Scarborough, Michigan, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2014. The Response (in the form of an email from Advance IT Capital and describing the sender as a client of the Respondent) was lodged with the Center on March 31, 2014. The Center acknowledged receipt of the Response on April 1, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 9, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Canadian corporation based in Montreal and engaged in the supply of cash advances to its clients. It commenced business in Canada in January 2006. The Complainant asserts and, from the evidence before the Panel, the Panel accepts on the balance of probabilities that the Complainant’s business is a substantial one running into many millions of dollars.
The Complainant is the registered proprietor of Canadian Trade mark registration no. 1386251 registered on September 30, 2009 (application filed March 4, 2008) ADVANCEit (device mark) for the operation of a business factoring credit card receivables.
The Complainant operates an active website connected to its domain name, .
The Respondent has an address in Michigan, USA, and is described in the Response as a service provider.
The Domain Name was registered on October 22, 2013 and is connected to a website which appears to offer cash advance services substantially identical to the services provided by the Complainant.
On January 9, 2014 the Complainant’s representative wrote to the Respondent drawing the latter’s attention to the Complainant’s rights and seeking inter alia transfer of the Domain Name. The Respondent did not immediately respond to the letter, but the Complainant’s representative was able to make contact with the Respondent by telephone. In the course of that telephone call the Respondent stated that the website had nothing to do with him, but that he had licensed the use of the Domain Name to a third party in Florida, whom he did not name.
On January 25, 2014 the Respondent emailed the Complainant in the following terms:
“TO WHOM IT MAY CONCERN: I write this letter to follow up on the phone call from your associates. JASON KUMMERL has no affiliation with the company ADVANCE IT CAPITAL. JASON KUMMERL does own the web domain and will not be forfeiting it to your corporation, as he had no prior knowledge of your companyies (sic) existence. If you would like to purchase the domain name from JASON KUMMERL, you may place an offer.”
Also in January 2014 the Complainant noticed that two of its promotional videos, which it uses to promote its services via its website and through YouTube, had been posted on YouTube in association with the Domain Name and giving a toll-free number (the same number appearing on the website connected to the Domain Name) inviting viewers to make contact. The Complainant lodged complaint with YouTube asserting that these videos and the textual material accompanying them were copyright works of the Complainant. On January 31, 2014 YouTube informed the Complainant that the offending material had been taken down. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its ADVANCEit registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant contends variously that the Domain Name was registered for the purposes of selling it to the Complainant at a profit and for the purpose of blocking the Complainant from registering it and that the Respondent (or a licensee for which the Respondent is responsible) is using it for commercial gain within the terms of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent himself did not reply to the Complainant’s contentions; instead, an informal response arrived (in time) from someone with an email address connected to the Domain Name and purporting to be from Advance IT Capital, a client of the Respondent.
The Center accepted this email as a Response for the purposes of this administrative proceeding even though it is not in the prescribed form and the Panel agrees that this was an appropriate step to take.
The following points are made in the email:
1. Advance IT Capital, whose website is connected to the Domain Name, was unaware of the infringing videos posted to YouTube and accompanied by Advance IT Capital’s toll-free telephone number. They were posted unauthorisedly by an unnamed third party commissioned to produce a video describing Advance IT Capital’s service offering.
2. There was no intention to take traffic from the Complainant.
3. The Domain Name was “purchased for the sole purpose of obtaining a name that reflects the products and services the URL represents in the US marketplace”.
4. The words “Financial” in the Complainant’s name and “Capital” as used by Advance IT Capital are different having different meanings and there is no risk of confusion.
5. The parties operate in different countries and are not competitors.
6. The parties’ logos and methods of doing business are different. “Our Marketing focus is not via the internet and have alternative and preferred methods”.
7. Advance IT Capital is a client of the Respondent, a service provider, and they are bound by a confidentiality/non-disclosure agreement.
8. “The Respondent acknowledged receipt of the Complainants letter; demanding that the URL; “www.” be relinquished over to Advance It Financial Corporation -- based on false accusations. The Respondent simply mentioned “financial consideration” within the response without any details whatsoever in effort to disclose a hypothetical situation to us (a client) in the event where the URL we own; “www.” -- would have either have to be given up or relinquished to Advance It Financial Corp for whatever reason.” Accordingly, the Respondent’s request for “financial consideration” was simply to recognize the inevitable expensive disruption that would result if the Respondent were to hand the Domain Name over to the Complainant.
9. Advance IT Capital is making a bona fide offering of services under and by reference to the Domain Name and has been in business in the financial field since 2005.
10. It is not possible for Advance IT Capital to provide services to entities in Canada; nor is it possible for the Complainant to provide its services to entities in the USA.
11. Advance IT Capital poses no threat to the Complainant and there is no evidence to support the Complainant’s contentions as to bad faith registration and use.
12. Advance IT Capital has demonstrated its willingness to negotiate an amicable settlement – “we are not just going to forfeit our Domain Name: “www.” which we rightfully purchased and currently own and operate in a different country.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
Before addressing these substantive issues, it is necessary for the Panel to come to a conclusion as to the identity of the proper Respondent. Is it the named Respondent i.e. the person named in the Registrar’s WhoIs database? Or is it Advance IT Capital the entity which claims to be separate from the named Respondent, albeit a client of the named Respondent, but the entity which is using the Domain Name and which filed the informal Response to the Complaint?
The Respondent and Advance IT Capital have been singularly uninformative in providing the background history to the acquisition and use of the Domain Name. The Respondent claims to have acquired it and licensed out its use, yet to have retained sufficient control over it to have felt able to sell it to the Complainant. Advance IT Capital, identifies the Respondent as its service provider and claims to have selected the Domain Name because it was available and presumably because it was an apt domain name for its field of activity. Advance IT Capital also claims to have paid for the Domain Name.
The Respondent claims to have no association with Advance IT Capital, yet, as indicated the Respondent felt able to offer to sell the Domain Name to the Complainant notwithstanding that it is being used by its “licensee” and Advance IT Capital is sufficiently close to the Respondent to be able to offer up explanations for the Respondent’s choice of words in his email of January 25, 2014 (section 4 above). The Panel strongly suspects that the association between the two is much closer than has been disclosed and perhaps this may be due to the existence of the Confidentiality/Non-Disclosure Agreement between them.
Making the best of it that it can, the Panel concludes on the balance of probabilities that Advance IT Capital came up with the idea of the Domain Name and instructed its service provider, the Respondent, to register it on Advance IT Capital’s behalf.
On that basis the beneficial owner of the Domain Name is the user of the Domain Name who claims to have paid for it, namely Advance IT Capital. Henceforth, except where otherwise indicated, all references to the Respondent embrace both the named Respondent and Advanced IT Capital. B. Identical or Confusingly Similar
The Domain Name comprises the words “Advance”, “It”, and “Capital” and the generic Top-Level Domain identifier “.com”.
The Complainant’s Canadian registered trade mark is a device mark comprising the word “Advance” and in lower case encircled by double circles the word “it”. The words are very prominent and in no sense obscured by the device element of the mark.
For the purpose of the assessment under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the gTLD “.com”, which in this case serves no purpose as a distinguishing feature.
Accordingly, the Panel has to decide whether or not “AdvanceItCapital” is confusingly similar to “AdvanceIt”.
While it is the case that the Complainant’s trade mark has a strongly descriptive flavour in the context of its business of financing cash advances and might have had difficulty achieving registration, otherwise than as a device mark, there is no disclaimer of the textual element of the mark. Given that in the world of finance where both parties (directly or indirectly1 ) operate, “capital” is a purely descriptive word, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant asserts that the Respondent registered the Domain Name knowing of the existence of the Complainant and intending to exploit the value of the Complainant’s trade mark either by selling the Domain Name to the Complainant at a profit or trading through a website connected to the Domain Name, providing similar services to those provided by the Complainant and benefiting from the reputation and goodwill represented by the Complainant’s trade mark.
The Complainant contends that the Respondent is (directly or indirectly2 ) providing an offering of services under and by reference to the Domain Name, but that, on the basis of its contentions above, that offering cannot be said to be bona fide. The Complainant prays in aid the fact that until the Complainant successfully complained to YouTube, YouTube featured promotional videos of the Complainant accompanied by a toll-free telephone number identical to that appearing on the website connected to the Domain Name and inviting interested viewers to call that number.
In the view of the Panel the Complainant has made out a prima facie case calling for an answer. The Respondent has produced several answers.
First issue: did the Respondent know of the existence of the Complainant when registering the Domain Name? The Respondent in the person of the named Respondent states that he was unaware of the existence of the Complainant at that time. The Respondent in the person of Advance IT Capital makes no mention of the matter in the Response. Nor does it challenge the claim that the Complainant’s business is a substantial one.
The Respondent in the person of Advance IT Capital claims to have been engaged in the financial services field since 2005, the year before the Complainant commenced business, yet produces no evidence in support. It is a bare assertion. The Panel has no substantiated information on the nature and extent of the Respondent’s business. The Panel is by no means certain that a business of any kind is being conducted by the Respondent under the Advance IT Capital name.
Indeed everything contended for by the Respondent is bare assertion unsupported by any evidence.
It must have been plain to the Respondent that the Complainant’s evidence in relation to the YouTube videos was potentially damning evidence, yet the Respondent has merely asserted that that exercise was the unauthorized doing of a third party. No attempt has been made to substantiate that bare assertion.
The Panel concludes that the Respondent’s answer to the Complainant’s prima facie case is no proper answer at all.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Panel has rejected the Respondent’s attempt to justify the selection of the Domain Name, a domain name confusingly similar to the Complainant’s trade mark. The Panel has done so on the basis of there being no evidence to suggest a bona fide offering of services under and by reference to the name Advance IT Capital and an inexplicable failure to produce something concrete to support the contention that the Respondent’s use of the Complainant’s promotional videos was an unauthorized aberration on the part of a third party, as claimed. In consequence it is not difficult for the Panel to conclude that the Respondent’s use of a name confusingly similar to the Complainant’s trade mark was a deliberate attempt to exploit the value of the Complainant’s trade mark for commercial gain and the Panel so finds.
On the assumption that a commercial operation is being conducted through the website connected to the Domain Name, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In the alternative, if in fact the Respondent is making no commercial use of the Domain Name whatsoever and the website connected to the Domain Name is a sham, the Panel finds that the Domain Name was registered for the purpose of selling it to the Complainant for a profit within the meaning of paragraph 4(b)(i) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: April 16, 2014
1 This is a reference to the fact that the named Respondent is said to be a service provider and the entity using the website is said to be a client/licensee of the named Respondent.
2 See footnote 1 supra
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